New South Wales Court of Appeal - Decisions of Interest Search - Area of law: Intellectual property


  1. 06/12/2016United States
    Intellectual property: Patent Act, s 289 makes it unlawful to manufacture or sell an “article of manufacture” to which a patented design or colorable imitation thereof had been applied; meaning of “article of manufacture”; correct assessment of damages

    A jury found that various smartphones manufactured by Samsung infringed design patents owned by Apple. Apple was awarded Samsung’s entire profit from the phones in damages, amounting to $399 million. This was affirmed by the Federal Circuit court.

    Court findings: The Court held that “article of manufacture” need not be the end product sold to the consumer but a component thereof. In the absence of sufficient argument by the parties, the Court did not resolve what the relevant “article of manufacture” was and instead remitted it to the Federal Circuit court for assessment.

    Samsung Electronics Co Ltd v Apple Inc  580 US (2016)
  2. 22/11/2016
    Intellectual property: confidential information; whether respondents’ software, business manuals and other documents were confidential

    Link 2 Pty Ltd v Ezystay Systems Pty Ltd  [2016] NSWCA 317
  3. 27/04/2012
    Intellectual property: Copyright; television broadcast and cinematograph film; copying; infringement; television broadcasts recorded and copied at request of subscriber by automated recording system owned by Optus; "time-shifting"; copy streamed by system to subscriber at subscriber's request; who is maker of the copy; Optus or alternatively, Optus and subscriber make(s) the copy. National Rugby League Investments Pty Limited v Singtel Optus Pty Ltd
    Copyright Act 1968  [2012] FCAFC 59
  4. 15/12/2011
    Intellectual property: Trade marks; claim for infringement of trade marks under licence agreement executed by parties; contractual provision in licence agreement prohibited use of any mark "similar to or capable or being confused with" the marks the subject of the licence agreement; parties carried on businesses in different specialised markets within broader allied health sector and not to general public; whether evidence from persons accustomed to dealing in specialised market as to likelihood of deception or confusion required
    Idameneo (No 789) Ltd v Symbion Pharmacy Services Pty Ltd  [2011] FCAFC 164
  5. 30/11/2011
    Intellectual property: Patents; claim of infringement of two patents; assertion of invalidity of one of those patents; interlocutory injunctive relief sought; whether strength of the infringement case and the balance of convenience and justice sufficient to sustain the grant of interlocutory injunction; fast-moving product; injunction likely to determine the fate of the product
    Samsung Electronics Co. Limited v Apple Inc.  [2011] FCAFC 156
  6. 02/11/2011United Kingdom
    Intellectual property: Patent; industrial applicability; biological material; appellant is the owner of a patent in a new human protein; appellant predicted the industrial application of the protein based on the properties of the superfamily of which the protein is a member; whether the predicted use of the biological material satisfied the requirement of industrial applicability outlined in Articles 52(1) and 57 of the European Patent Convention
    Human Genome Sciences Inc v Eli Lilly and Company  [2011] UKSC 51
  7. 17/10/2011
    Intellectual property: Copyright; whether reproduction of whole or substantial part of copyright work; trade marks; whether marks used in Australia in "other relation" to goods; whether directors personally liable for company's infringement; defence of use in good faith of own name; intention at time of application for registration to use mark in Australia; exercise of discretion not to remove marks from Register
    Optical 88 Limited v Optical 88 Pty Limited  [2011] FCAFC 130
  8. 15/09/2011
    Intellectual property: Intellectual property; infringement; construction of the claims of the patent; whether use of the word "device" in the claims encompasses orientation tools in two parts
    Australian Mud Company Pty Ltd v Coretell Pty Ltd  [2011] FCAFC 121
  9. 27/07/2011United Kingdom
    Intellectual property: Copyright; sculpture; definition of sculpture in the Copyright, Designs and Patents Act 1988 (UK); consideration of proper approach to three-dimensional objects that have an artistic purpose and a utilitarian function; justiciability; enforcement of foreign copyright; whether a claim against a defendant domiciled in England for infringement of a foreign copyright is justiciable; whether a claim for infringement of a foreign copyright is non-justiciable
    Lucasfilm Ltd & Ors v Ainsworth & Anor  [2011] UKSC 39
  10. 27/07/2011Singapore
    Intellectual property: Copyright; authorship; ownership; originality; compilation of data in a horse-racing magazine; whether a corporate entity can be an "author" of an original work for the purposes of copyright; whether the appellant infringed the rights of the respondent; discussion of Copyright Act 1968 (Aus) and Australian authorities relating to authorship and ownership
    Asia Pacific Publishing Pte Ltd v Pioneers & Leaders (Publishers) Pte Ltd  [2011] SGCA 37